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No Motivation to Combine May Not End the Obviousness Inquiry

No Motivation to Combine May Not End the Obviousness Inquiry

by David Cochran | Feb 4, 2019 | Federal Circuit, PTAB Trial Basics

By Kait Crowder and Dave Cochran In Polygroup Limited MCO v. Willis Electric Company, Ltd., the Federal Circuit reversed and remanded the PTAB’s findings of patentability in light of several obviousness arguments presented by the petitioner, concluding that the PTAB...
Overreaching May Result In Denial of Petition

Overreaching May Result In Denial of Petition

by David Cochran | Jan 31, 2019 | PTAB Trial Basics, Trial Institution

By Kait Crowder and Dave Cochran In Deeper, UAB v. Vexilar, Inc., the PTAB recently considered the extent of its discretion to grant or deny inter partes review in a case where a petitioner challenges multiple claims on numerous grounds.  In this case, the petitioner...
Petitioner’s Reply May Expand Presented Arguments and Address New Claim Constructions

Petitioner’s Reply May Expand Presented Arguments and Address New Claim Constructions

by David Cochran | Aug 31, 2018 | Federal Circuit, PTAB Trial Basics

By: David Anderson and Dave Cochran On August 27, 2018, the Federal Circuit vacated and remanded the PTAB’s finding that claims 1-3, 6-9, and 12-14 of U.S. Patent No. 5,602,831 (“the ’831 Patent”) are not unpatentable under 35 U.S.C. § 103.  See Ericsson Inc. v....
Claim Constructions Under the Broadest Reasonable Interpretation Standard Must be Reasonable

Claim Constructions Under the Broadest Reasonable Interpretation Standard Must be Reasonable

by David Cochran | Jul 23, 2018 | Claim Construction, Federal Circuit

By: David E. Anderson[1] and Dave Cochran On July 13, 2018, the Federal Circuit reversed the PTAB’s finding that claims 1-5 and 11 of U.S. Patent No. 8,651,118 (“the ’118 Patent”) are anticipated by U.S. Patent No. 4,148,330 (“Gnaga”) and Japanese Application No....
Use Caution When Considering Multiple IPRs Against a Single Patent

Use Caution When Considering Multiple IPRs Against a Single Patent

by David Cochran | Jun 11, 2018 | Petitions, PTAB Trial Basics

By: Jason Garr and Dave Cochran The recent PTAB order in IPR2017-01427 is a cautionary tale for petitioners considering multiple IPRs against a single patent.  On May 11, 2017, Facebook and WhatsApp filed the ’1427 IPR petition challenging claims 1-8 of U.S. Patent...
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    The opinions expressed are those of the authors and do not necessarily reflect the views of Jones Day or its clients. The posts and information provided are for general information purposes and are not intended to be and should not be taken as legal advice.